Deceptive marks, trademarks and service marks, are barred from trademark registration on the even if there is a showing of secondary meaning under Section 2(f) of the Lanham Act.
Section 2(a) of the Lanham Act states that a trademark cannot be registered at the United States Patent and Trademark Office if it is deceptive. Unlike other other Section 2 bars to registration, a deceptive trademark still cannot be registered even if the trademark owner can show the mark acquired secondary meaning under Section 2(f) of the Lanham Act.
Test for Determining if a Mark is Deceptive
When a trademark Examining Attorney reviews a trademark application, he or she will determine if the trademark should be refused based on any Section 2 bars to registration. If an Examining Attorney finds a mark to be deceptive, an Office Action will be issued and the trademark owner, or their trademark attorney, cannot argue that the mark has acquired secondary meaning under 2(f). Instead, the trademark applicant will need to convincingly argue that the mark is not descriptive.
The test of whether a mark is deceptive consist of the following three prongs, as outlined in the 2006 Trademark Trial and Appeal Board case In re ALP of South Beach Inc.:
- Is the term misdescriptive of the character, quality, function, composition or use of the goods or services?
- If so, are prospective purchasers likely to believe that the misdescription actually describes the goods or services?
- If so, is the misdescription likely to affect the decision to purchase?
If the answer to all three questions is yes, the mark will be considered deceptive and barred from registration on the Supplemental or Principal Register at the USPTO. If only the first prong is answered yes, the mark will likely be considered arbitrary or suggestive. For instance, think about the mark APPLE for computers. APPLE is misdescriptive of computers, but purchasers are not likely to believe APPLE is actually describes the products sold under the APPLE brand.
If the answer is yes to questions one and two, but not three, the mark will be considered a merely deceptively misdescriptive mark. Unlike deceptive trademarks, merely deceptively misdescriptive marks can be registered if the trademark applicant, through their trademark lawyer or pro se, can show the mark has acquired secondary meaning under 2(f) of the Lanham Act.
If the answer to all three questions are yes, the mark will be deemed deceptive and will be barred from registration on either trademark register at the USPTO. The most important prong to finding a mark is deceptive is the third prong, i.e. is the misdescription likely to affect the decision to purchase? There is a strong policy consideration why if a mark fails this prong it cannot be a registered trademark. If consumers buy products after being deceived about what the product is, consumers will begin to not trust registered trademarks. To keep consumer confidence up in registered trademarks, the law bans registration of marks that will deceive consumers in their purchasing decisions.
Even if a mark is not found to be deceptive during the application process, a registered mark can be cancelled at anytime if a third party instigates a cancellation proceeding based on the mark being deceptive. In general, deceptive trademarks are more likely to be cancelled than refused by an Examining Attorney.
The ORGANIK and design mark (above, as seen in TESS) was cancelled for being deceptive because the clothing and textiles were not made with organically grown cotton or other organic materials.
Do you have any questions about deceptive marks? Leave a comment below or contact us and we will do our best to help you out.